[Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs

[Bruce Tonkin]

Hello Jonathan,


>>  I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward). 

Thanks - as noted in Copenhagen I think all have accepted the public interest issues.

>>  For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. 

We may be talking cross purposes here.

Article 6ter is a basis for preventing an entity for registering a trademark that uses the IGO name or acronym related to the class of that trademark.   It doesn’t actually stop someone from mis-using the IGO name or abbreviation.      It does stop a  third party applying for a trademark in the subject area of the IGO, and then that third party taking advantage of trademark protection to take legal action to stop others (including an IGO) using that as a mark.  

The question I have proposed is different.

I am trying to establish the legal mechanisms that IGOs, or a Government on their behalf, could use to take action against mis-use of an IGO name or abbreviations.      I am assuming that it is in the "public interest" for an IGO or Government to take some action to stop the mis-use - just trying to be clear "how" that would be done.

I gave the example that in Australia, the Government would most like have to rely on Consumer Protection law. 

e.g see https://en.wikipedia.org/wiki/Australian_Consumer_Law

This law is not a specific protection for the names and abbreviations IGOs but does stop various practices such as "misleading or deceptive conduct".  

I simply thought it would be useful to understand what laws are available in different jurisdictions and how they are applied - to help refine thinking about a dispute resolution mechanism.

For IGOs that don’t have trademarks and have other legal rights, then they (or a Government on their behalf) would not be able to use  trademark law to take action for a party that was mis-using the IGO name or abbreviation.  

I hope that is clearer.  Any examples you can provide where a Government has taken legal action to protect  an IGO name or abbreviation not protected via a trademark would be very helpful of course.

My proposal is merely to get some additional facts to help all parties - not disputing the facts that you and others have already established. 

These additional facts may also be relevant for other situations - e.g protecting country names or ccTLDs for example.

Regards,
Bruce Tonkin